Successful UDRP Claim Against Allegation of Trademark Rights by the Respondent

August 30, 2022

In a recent decision under the UDRP, the complainant succeeded in its request for the transfer of several domain names that included its well known BOOKING.COM trademark, despite defence by the respondent that he has rights or legitimate interests deriving inter alia from his trademark registration. The panel has held that the respondent registered the domain names in dispute to target the complainant, and to take advantage of the notoriety of its trademarks, and that the respondent probably obtained registration of his trademark to improve his position in a potential domain name dispute.

Background

The complaint was filed by Booking.com B.V., the established company operating in the field of reserving accommodation online. The complainant relied on the trademark BOOKING.COM for which it had obtained various national and international trademark registrations.

The respondent was a Spanish physical person who registered three of the domain names in dispute (<bookingflüge.com>, <bookingvoli.com>, <bookingvols.com>) on 1 September 2021. All three mentioned domain names were parked with the Registrar. The fourth domain name in dispute, <bookinghotel.com>, was acquired by the respondent on 30 July 2021 (while having been initially registered by a third party in 1998) and it redirected to the website of one of the complainant’s competitors. The respondent had registered a Spanish trademark consisting of BookingHotel as of 8 February 2022.

With respect to the second element of the Policy the complainant argued, inter alia, that the registration of the Spanish BookingHotel trademark by the respondent does not automatically confer rights or legitimate interests with respect to the disputed domain names.

The complainant argued that as:

(i) the respondent has only registered his trademark in Spain although he pretends to launch his platform worldwide,

(ii) the respondent has only registered his trademark for class 35, although he should have logically sought protection for class 43 relating to services for accommodation reservation,

(iii) a figurative trademark consisting of dictionary terms on a coloured background does not support a claim of rights or legitimate interests under the Policy,

it follows that the respondent had registered the trademark to circumvent the application of the Policy, knowing of the existence of the complainant, its trademark and its website as well as its position and recognition on the market.

It also argued that the respondent had contacted the complainant in February 2022 to obtain illegitimate profit from the disputed domain names, as he asked either for the complainant to pay him for working together or to sell the domain names for a value in excess of the documented costs related to the disputed domain names.

The respondent filed a response, arguing that he has a project in trial phase where he uses his trademark BOOKINGHOTEL, and that the correspondence sent to the complainant was not in bad faith as he only intended to be part of the affiliates system of the complainant and reach some sort of an agreement. The respondent claimed that the fact that the disputed domain name <bookinghotel.com> redirected to the website of a competitor of the complainant is because he is doing conversion tests with many systems of affiliates.

Decision

The panel allowed the complainant’s request for the transfer of the domain name in dispute.

With respect to the second element of the Policy, and specifically on what concerns the defence of the respondent that he has a registered trademark, the panel took into account the circumstances of the case, and has held that the registration of the respondent’s trademark was requested and obtained with the purpose of improving his position in a potential domain name dispute and that the allegations by the respondent in and outside the proceedings (such as those referring to a potential project) can be qualified as pretextual allegations to escape the application of the Policy.

The circumstances of the case included (i) the fact that the trademark of the complainant is well known, (ii) the fact that the respondent has contacted the complainant informing it that he works with the complainant’s direct competitor and offering for sale the domain names in dispute as well as his trademark (that were registered less than a year).

Comment

To succeed in a UDRP complaint, the complainant must prove three elements, as described in a previous post. The second element that the complainant must fulfil is that the holder of the domain name in dispute has no rights or legitimate interests in respect of that domain name.

One of the possible defences that respondents can raise under the second element is that they own trademark rights.

(i) When Registration of a Trademark Supports a Finding of Rights or Legitimate Interests

Generally, UDRP panels consider that “respondent’s prior registration of a trademark which corresponds to a domain name will ordinarily support a finding of rights or legitimate interests in that domain name for purposes of the second element.Section 2.12.1 of the WIPO Overview 3.0.

A recent example of this type of cases is in the WIPO case no. D2021-4075 concerning the domain name <authentixperu.com>, where the complaint was rejected on the basis that the respondent had rights over the figurative trademark AUTHENTIX PERU.

The panel found that the circumstances of the above case do not indicate that the said trademark was obtained primarily to circumvent the application of the Policy or otherwise to prevent the complainant’s exercise of its rights.

Specifically, the panel considered the circumstances of the case, including the fact that:

(i) the respondent applied for its trademark prior to the letter of demand from the complainant,

(ii) the respondent obtained registration for its trademark prior to the filing of the complaint,

(iii) even if the respondent’s trademark was registered over two years after the registration of the disputed domain name, its textual elements are the same as the initial elements of the respondent’s company name which was formed prior to the registration of the domain name in dispute,

(iv) the respondent’s trademark is registered in Peru, which is the jurisdiction where the respondent is registered and does business, and

(v) the respondent makes active use of its trademark on its website, which offers products and services for the sourcing of textiles and handicrafts from Peru.

A similar solution in the case no. D2021-0110, concerning the domain name <basfu.net>.

(ii) When Registration of a Trademark Does Not Support a Finding of Rights or Legitimate Interests

However, if the overall circumstances of the case point to the fact that the trademark registration was sought by the respondent to circumvent the application of the Policy, or “otherwise prevent the complainant’s exercise of its rights (even if only in a particular jurisdiction)”, the panels would not uphold the defence of the respondent relying on registered trademark rights, as in the case at hand. See Section 2.12.2 of the WIPO Overview 3.0.

Similar solution as in the bookinghotel.com case discussed here was found in the WIPO case no. DME2021-0014, concerning the domain name <cars24.me>. The defence of the respondent relying on trademark rights was rejected. The panel found that such registration does not confer rights or legitimate interests in the circumstances of the case, as the registration

is likely to have been made not as a good faith evolution of its brand, but to strengthen its bargaining position vis-à-vis the Complainants or block their expansion to the United Arab Emirates“.

WIPO case no. DME2021-0014

Registration of a trademark should be done for use in commerce. If the purpose for trademark registration is to circumvent the application of the Policy, or to block or otherwise restrict the complainant’s exercise of its trademark rights, panels would not uphold the defence relying on trademark rights and would allow the complaint if all the other conditions for a UDRP complaint are met.

The decision in bookinghotel.com case is also important as it underscores what type of arguments and documents should be filed by complainants if they intend to rely on the notoriety of their trademark.

About Me

Mihaela Maravela is an experienced international arbitration counsel, commercial arbitrator and domain name panelist. She also acts as a transactional lawyer.

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